Annual Technical Report on Trademark Information Activities in

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2017 submitted by

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the Canadian Intellectual Property Office

I. GENERAL OVERVIEW OF RECENT DEVELOPMENTS IN TRADEMARK INFORMATION ACTIVITIES CARRIED OUT BY THE OFFICE

The Canadian Parliament has passed a bill, Bill C-31, to modernize Canadian Trademark Legislation and position Canada to adhere to the Singapore Treaty and the Madrid Protocol.  CIPO is currently working on changes to their trademark processing systems (e-commerce and back-end) for the changes due to Bill C-31.  These changes will come into force once the Trademark Regulations are finalized and the system changes are ready.  This is currently planned for 2018.

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Statistics: changes in terms of application filings and registrations with respect to previous year; trends or areas experiencing rapid changes

Trademark Filings

Trademark Registrations

Other matters and useful links (URLs): annual report of the Office, news page, statistics, etc.

CIPO Client Service Commitments

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr02948.html

Annual Reports 2014-2015

https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr03993.html

II. SERVICES AND ACTIVITIES RELATED TO TRADEMARK INFORMATION CARRIED OUT BY THE OFFICE

Information and support provided by the Office to applicants regarding filing on paper and/or e-filing (instructions, seminars, etc.) - URLs

CIPO has consolidated the public access areas (search rooms) of the various IP products (patents, trademarks, copyrights, industrial designs, integrated circuit topographies) into a single Client Service Centre. Our Client Service Centre is your central point of contact for general and technical inquiries. This Client Service Centre houses both the manual search collections as well as access to the automated search systems.

Information Officers are available during office hours, Monday to Friday, from 8:30 a.m. to 5:00 p.m. (EST), with the exception of statutory holidays at our Headquarters located in Gatineau, Quebec to assist the public in all aspects of their IP requirements.

URLs of web pages of the Office's website for electronic filing of trademark applications:

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00021.html#trade-marks

Availability of the application dossier in electronic form

Currently trademark documents are still in paper format.  CIPO is undertaking a project as part of its IT Modernization initiative to create an application dossier in electronic form for trademarks.  

Matters concerning classifying
(i) Classification and reclassification activities; classification systems used, e.g., International Classification of Goods and Services for the Purposes of the Registration of Marks (Nice Classification), International Classification of the Figurative Elements of Marks (Vienna Classification), other classification

With Bill, C-31 CIPO will require the use of NICE classification for goods and services.  While this legislation is not yet in force, clients are encouraged to classify their goods/services using the NICE classification system. Trademark applicants are required to file a statement in ordinary commercial terms of the specific goods and/or services for their trademark.

CIPO uses both a "key word" and the Vienna Classification system as methods of indexing the trademark (word elements and figurative elements). The Vienna Codes are available on the Canadian Trademarks Database on the CIPO web site.

(ii) Use of electronic classification systems and pre-defined terms of the classification applied

Trademark applicants are not required to use pre-defined terms for their statement of goods and/or services. The Trademarks Branch suggests that the Canadian Goods and Services Manual published by CIPO and available on our web site, be used as a basis for the selection of terms for the statement of goods and/or services. This manual is in a searchable format.

In June 2009, the Canadian Intellectual Property Office signed a Memorandum of Cooperation with the Trademark Trilateral Partners (United States Patent and Trademarks Office, Japan Patent Office and the Office for the Harmonization of the Internal Market). The Trilateral Partners maintain a list of identifications of goods and services that if entered into an application for the registration of a trademark would be accepted by each of those partners.

The assessment of those terms to ensure compliance with Canadian legislative requirements is almost complete and the acceptable terms will soon be added to the Goods and Services Manual. Each identification stemming from this agreement will be identified with the letter T and will appear with its associated Nice Classification.

These identifications (more than 12,000 entries) will provide greater clarity and guidance to trademark applicants regarding the acceptability of goods and services in Canada.

Matters concerning processing of different types of non-traditional marks (e.g., three-dimensional, motion, hologram, color mark, etc.)

IPO currently does not process non-traditional marks however Bill C-31 which has passed Canadian Parliament approval will amend the Trademarks Act to allow for non-traditional marks.  This bill in not yet in force.

Other activities

III. SOURCES OF TRADEMARK INFORMATION PROVIDED BY THE OFFICE

Main types of publications in the field of trademark information, outline of the content and medium (on paper, on CDs, online - URLs)

Trademarks Journal

Our weekly Trademarks Journal contains marks for applications filed, which are advertised following approvals, and announcements regarding registrations.

These announcements include:

• the date of the application/registration;
• the serial number of the application/registration;
• the name and address of the owner;
• a reproduction of the trademark or necessary information for public inspection;
• a statement of goods and/or services.

Practice Notices

Practice notices pertaining to Office Practices and Policies are available on the Trademarks home page of the CIPO website under Practice Notices.

Trademark News email subscription service

Clients can register to our email subscription service to stay in touch with the latest trademarks developments at CIPO.

These emails will include:

• updates to the Goods and Services Manual;
• new consultations on trademarks;
• practice notices on trademarks; and
• "What's New" announcements on trademarks posted on the CIPO website.
• When a trademark update is posted on the CIPO website, it will be emailed to subscribers within 24 hours.

Twitter

CIPO's Twitter presence is intended to enhance two-way communication between CIPO and its customers as laid out in the Business Strategy.

• Tweets should be relevant to our business.
• In general, new information should not be released solely on Twitter (the CIPO website is still the primary access point for information).
• While the language used on Twitter is sometimes less formal, we must maintain our professionalism.
• Tweets are limited to 140 characters.
• Tweet idea submissions will be reviewed by Corporate Communications before being posted.

All outputs of trademark information are produced from the trademark computer system INTREPID II. Most letters and reports are currently produced using MS-Word 2010 which is integrated within the INTREPID II system. All other outputs are produced using the electronic forms package Accelio Present Central (formerly JetForm and now Adobe) which is also integrated within the INTREPID II system.

While most outputs are printed to paper, the acknowledgement notice and client proof sheet for applications filed electronically (e-service), the trademark renewal certificate, renewal confirmation notice, the agent renewal notice, and the agent certificate are produced in PDF (Portable Document Format) and sent to the agent/client electronically as email attachments.

The registration notice and certificate are posted on the e-registration service for clients to retrieve. The majority of the letters produced by Accelio Present Central are actually created in PDF for storage and retrieval purposes. Some of the MS Word documents are also kept for retrieval purposes.

CIPO also provides the trademark information to various external search houses in electronic format. The trademarks and agents information is written to sequential data files before it is sent out to the search houses using a FTP (File Transfer Protocol) software.  CIPO is in the process of migrating the data file from an old proprietary format to the WIPO ST.96 standard.  Currently both formats are available.

Official Gazettes: main types of announcements, frequency of publication, medium (on paper, on CDs, online, URL), etc.

The Trademarks Journal is available in electronic form on the Canadian Intellectual Property Office (CIPO) web site (www.cipo.ic.gc.ca). The Journal is available in PDF format and can be downloaded (free of charge), viewed and printed with Adobe Reader. The electronic form of the Journal is the official version. All Trademarks Journals from January 2000 onwards are also available online.

Trademark Journal

http://www.ic.gc.ca/cipo/tradejournal.nsf/tmmain-eng?readform

Practice Notices

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr00132.html

Trademark Newsletter

http://www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr02989.html#tradeMark

Canadian Trademarks Database - Basic Search

http://www.cipo.ic.gc.ca/app/opic-cipo/trdmrks/srch/bscSrch.do?lang=eng

Canadian Trademarks Database - Advanced Search

http://www.cipo.ic.gc.ca/app/opic-cipo/trdmrks/srch/tmSrch.do?lang=eng

Canadian Goods and Services Manual

https://www.ic.gc.ca/app/scr/ic/cgs/ext/home.html

Information products (coverage, medium, etc.) available to examiners, including external documentation and databases

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Legal status information (kind of information, coverage, medium, etc.)

Other sources

Canadian Trademark Legislation

http://laws.justice.gc.ca/en/T-13/index.html

http://laws.justice.gc.ca/en/T-13/SOR-96-195/index.html

IV. ICT SUPPORT TO SERVICES AND ACTIVITIES RELATED TO TRADEMARK INFORMATION CARRIED OUT BY THE OFFICE

Specific software tools supporting business procedures within the Office: general description, characteristics, advantages, possible improvements

The Trademarks Branch utilizes an end-to-end trademark processing system, INTREPID II, and the system became fully operational in November 1996. INTREPID II operates in a client/server environment. All trademark employees have access to the system via an internal, Local Area Network (LAN). The system contains bibliographic trademark data dating from the beginning of Canada's trademark management system in 1864, including pending and registered trademarks, trademark designs, outgoing correspondence and trademark notices. INTREPID II is used within the office to manage the overall trademark process, including examination, opposition, assignments and renewals, and is able to make process decisions automatically. The system supports such specific office processes as preparing correspondence, updating information, preparing and transmitting notices electronically.

In July 1999, an electronic trademark application filing component was added to allow a client to file their trademark application electronically over the Internet. The e-services are continuously expanding: Trademark Renewals, the payment of the Registration Fee, submission of a Declaration of Use and request for an Extension of Time to submit a Declaration of Use can be performed electronically over the Internet. The most recent additions are the Trademarks Opposition Board e-services, introducing to their clients electronic filing of requests for extensions of time and statements of opposition. These e-services were made available July 2010. For all client front-ends, the information is checked for completeness, is transferred to the Branch via the Internet and is automatically loaded into the INTREPID II system where an electronic acknowledgement (in PDF) is emailed back to the client.

Other trademark automation initiatives in the area of E-Services being considered are:

CIPO is currently working on upgrades to their electronic processing systems (both e-services and back-end) for the implementation of Bill C-31.  In addition CIPO is working on the detailed requirements for the processing of Madrid marks under the Madrid Protocol.

CIPO is undertaking an IT Modernization initiative which will cover all areas of automated systems including IP Case Management and IP Document Management.

Hardware used to supporting business processes of the Office

The INTREPID II system is a client/server system with the client component developed with Team Developer (Gupta SQL Windows 2005 v 4.0.0), and the UNIX (AIX) server using ORACLE 10g database. Plans are underway to upgrade to Oracle 11g. Windows file servers are used for electronic mail and for sharing common files during development. A NFS disk area on the main server is used to hold the design images. This allows client workstations to access the designs within the client interface, while storing all design images under the control of the main server.

SERVER

• IBM AIX servers
• Operating System AIX
• 935 GB HardDisk, 8GB RAM
• Oracle RDMS V 11g
• Oracle SQL*Net V 9
• Microfocus server express 5.0
• TCP/IP
• Image Converter: Alchemy 1.13
• Electronic Forms Generator: JF Central 5.4.1

CLIENT WORKSTATION

• Over 235 workstations are connected to the server
• Intel based (min 3.2 GHz, 1GB RAM, 80GB disk)
• SVGA monitors 19", 21" or 22" LCD  mostly dual monitors
• MS-Windows 7 Professional Version, MS Word 2010,
• Team Developer (Gupta SQL Windows 2005 v 4.0.0), TCP/IP SQL*Net 9.0
• OpenText NFS (Network File System)
• Some workstations with Bar-code readers and/or scanners

PRINTERS (networked)

• Xerox network printers
• NETWORK
• TCP/IP
• 1 gb between server and switches
• 100 mb between switches and workstation

Internal databases: coverage, updates, interlinks with external sources

CIPO's Trademarks Branch maintains a complete history of its trademark files in paper form, and information pertaining to all active marks from 1864 and inactive marks from 1979 to date in electronic form.

CIPO uses a Web based search system from On Scope for trademark searches. As well, CIPO provides its trademark data to other commercial databases for external client use.

Establishment and maintenance of electronic search file: file building, updating, storage, documents from other offices included in the search file

All bibliographic data contained in trademark applications and registrations are maintained on the INTREPID II system.

The Canadian Trademarks database is available to the public on the Internet via the CIPO website. This version of the database is comprised of all active and many inactive marks that were either applied for or registered pursuant to the current Trademarks Act or former trademark legislation. The database also includes all trademarks that were cancelled, expunged, abandoned or refused after 1979, and some marks that were cancelled, expunged, abandoned or refused prior to 1979.

Canada no longer maintains a manual search file. All trademark information is maintained within the INTREPID II database system and contains over a million marks (1,303,070). This information is provided to various external search services.

Improved Bilingual Search Capability

We have added a feature to help clients to conduct searches in both English and French. This will help to ensure that their search query includes more terms, thereby resulting in an increased results list. This improvement is of interest to those who know their search criteria in one of Canada's official languages but not in the other.

Administrative management electronic systems (register, legal status, statistics, and administrative support)

The INTREPID II system is integrated with an improved version of the previous Trademarks Executive Information System (EIS). The EIS system permits detailed and comprehensive tracking and monitoring of trademark processes. The EIS system provides daily information on production volumes and turnaround times for trade mark processes. The EIS system is available via the Intranet to allow broader access to reports within the Office. 

The trademark search collection is managed in electronic form. The clients have access to the latest versions of the electronic records. A structured backup regime is in place to ensure preservation of the information.

Other matters

V. PROMOTION ACTIVITIES AIMED TO SUPPORT USERS IN ACCESS AND EFFICIENT USE OF TRADEMARK INFORMATION

Office's library (if deals with trademark information): equipment, collection management, network of libraries in the country, cooperation with foreign libraries

Public access to the trademark electronic processing system (INTREPID II) is available in the Client Service Centre.

The trademark database is available to the public on the Internet via the CIPO web site.

The official index that is required to be kept under the supervision of the Registrar of Trademarks pursuant to subsection 28(1) of the Trademarks Act, is accessible in the Canadian Trademarks Database on the CIPO Internet site.

The following trademark reference material is also available to the public via the CIPO web site:

• Trademarks Act and Regulations
• Examination Manual
• Goods/Services Manual
• Practice Notices
• Trademarks Guide
• Sample Forms
• Other reference materials
• All Trademarks Journal (in PDF format) as of January 2000
• E-Services

Publications related to different business procedures and trademark information sources available to users, for example, books, brochures, Internet publications, etc.

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Education and training: training courses, e-learning modules (URLs), seminars, exhibitions, etc.

Other activities

VI. INTERNATIONAL COOPERATION ACTIVITIES IN THE FIELD OF TRADEMARK INFORMATION

International exchange of trademark information in machine-readable form (e.g., Official Gazettes)

The official Trademarks Journal is available on-line in PDF (Portable Document Format) 

http://www.ic.gc.ca/opic-cipo/tmj/eng/home.html

CIPO is presently providing trademark data to a number of external database search providers including weekly updates of Trademark data and design images.

Participation in international or regional activities and projects related to trademark information

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Assistance to developing countries

Other activities

VII. OTHER RELATED MATTERS